Cboe Exchange, Inc. v. asd asd
Claim Number: FA2306002048823
Complainant is Cboe Exchange, Inc. (“Complainant”), represented by Kevin M. Bovard of Baker & Hostetler LLP, Pennsylvania, USA. Respondent is asd asd (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tocboe.com>, registered with Amazon Registrar, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023.
On June 14, 2023, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <tocboe.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tocboe.com. Also on June 19, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a securities and derivatives exchange in the United States and throughout the world. Complainant has rights in the CBOE trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5613242, registered on November 20, 2018). Respondent’s <tocboe.com> domain name is identical or confusingly similar to Complainant’s CBOE trademark as it merely adds the generic word “to” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <tocboe.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the CBOE trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s services on an unauthorized basis.
Respondent registered and uses the <tocboe.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to divert users to a competing website. Additionally, Respondent attempts to pass off as Complainant and mislead users for Respondent’s financial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the CBOE trademark prior to registering the disputed domain name. Next, Respondent used a privacy service to conceal its identity. Finally, Respondent has provided inaccurate or fictitious contact information to WHOIS.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
U.S. Trademark Registration No 5,613,242 CBOE (logo), registered November 20, 2018 for services in Intl Class 36;
U.S. Trademark Registration No 2,484,436 CBOE (word), registered September 4, 2001 for services in Intl Class 36; and
International Trademark Registration No IR1374822 CBOE (word), registered September 27, 2017 for services in Intl Class 36, designating Australia, Switzerland, China, European Union, United Kingdom, Israel, India, Japan, Korea (Republic of), Mexico, Norway, Philippines, Russian Federation, Singapore, and Turkey.
The disputed domain named <tocboe.com> was registered on March 27, 2023.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the CBOE trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 5613242, registered on November 20, 2018), and International Registration with WIPO (e.g. Reg. No. IR1374822, registered on September 27, 2017).
Registration of a trademark with multiple trademark national or international offices is sufficient to establish rights in said trademark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS trademark.). Therefore, the Panel finds that Complainant has rights in the CBOE trademark per Policy ¶4(a)(i).
Next, Complainant argues that Respondent’s <tocboe.com> domain name is identical or confusingly similar to Complainant’s CBOE trademark as it merely adds the generic word “to” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent lacks rights or legitimate interests in the <tocboe.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the CBOE trademark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “asd asd” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the CBOE trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <tocboe.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s services for sale on an unauthorized basis. Using a disputed domain name to divert and confuse users as to the ownership or association of the site is indeed not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website showing that Respondent used Complainant’s name and logo at the top left of the webpage. Complainant argues this is confusing to users. The Panel indeed agrees, and find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <tocboe.com> domain name in bad faith as Respondent registered the disputed domain name to compete with Complainant, and disrupting Complainant’s business. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant can clearly evince bad faith registration and use per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). As noted above, Complainant provides screenshots of the disputed domain name offering similar services in order to confuse users and compete with Complainant. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent registered and uses the <tocboe.com> domain name in bad faith as Respondent registered the disputed domain name to pass off as Complainant for financial gain. Registration of a confusingly similar domain name with the intent to pass off as a complainant in an attempt to phish for personal information can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides a screenshot of the disputed domain name, including a login page where Respondent is likely phishing for user’s personal and financial information. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant argues that Respondent registered the <tocboe.com> domain name with actual knowledge of Complainant’s rights in the CBOE trademark. Use of a trademark to divert Internet traffic to a disputed domain name where a respondent passes off as a complainant can clearly demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of the CBOE trademark and Respondent’s resolving website using Complainant’s name, logo and holding itself out as a financial trading platform demonstrate Respondent’s actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name. The Panel agrees, and find that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <tocboe.com> domain name in bad faith as Respondent registered the disputed domain name using a privacy service in order to conceal its identity. Using a privacy service to register a domain name with the intent to conceal one’s identity may evince bad faith registration and use per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Complainant argues using a privacy service supports the inference that Respondent knowingly engaged in the registration of the disputed domain name in bad faith. The Panel agrees, and find that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant asserts Respondent registered and uses the <tocboe.com> domain name in bad faith as Respondent registered the disputed domain name using inaccurate or false contact information. Registering a domain name with false contact information may evince bad faith registration and use per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant states that the WHOIS information included a non-existent street, “asdasd” which is the same as Registrant’s purported name, with no city name and a non-existent zip code. Complainant argues this information further supports a finding of bad faith registration. The Panel agrees, and find that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tocboe.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 25, 2023
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